On August 7, 2017, the Thai government officially deposited the instrument of accession to the Madrid Protocol with the WIPO, marking the starting date of the three-month period before the Protocol becomes effective in Thailand. Consequently, the Madrid System will come into effect for Thailand (the 99th member) as from November 7, 2017.
In its instrument, the government makes declarations on three issues. Firstly, a period to issue provisional refusal will be extended to eighteen months, with further extension possible in case of an opposition. Secondly, an individual fee to be specified in Ministerial Regulations to be issued by virtue of the accession will apply to international applications/registrations designating Thailand. Thirdly, recordal of a license agreements with the International Bureau will not be effective with regard to Thai applications/registrations.
After this deposition, the next step is to issue Ministerial Regulations to elaborate on the process. It is anticipated that the Regulations will contain the following details:
- All documents submitted through the Thai Trademark Office to the International Bureau must be in English. If the Thai Office finds an international application incorrect or incomplete, the applicant will have to remedy it within 15 days upon receipt of a notice. Otherwise, the Thai Office may not be able to forward the application to the International Bureau within 120 days and the date of filing with the Thai Office will not be considered as the filing date of the international application. If the applicant does not comply with the Thai Office’s notice within 120 days, the application will be deemed abandoned.
- For an international application designating Thailand, the Thai Trademark Office will translate the necessary content into Thai. In case of provisional refusal, the applicant is required to appoint an agent in Thailand to deal with it. The response may have to be in Thai. In case of failure to respond, the Thai Office may partially accept the application for the goods/services in relation to which the refusal does not apply.
- For certification marks and collective marks, the applicant is required to submit a rule on use and a list of authorized users in Thai.
- The relevant forms, e.g. the application form and forms for various notices, will be prescribed by the Director-General of the Department of Intellectual Property. In addition, the DIP establishes a specialized unit to handle both inbound and outbound applications under the Madrid System.
© Mr Nathapong Tongkaew, Partner at Domnern Somgiat & Boonma Law Office Limited
Bio of IPR Expert Mr. Nathapong Tongkaew
Mr. Tongkaew graduated from Thammasat University’s Faculty of Law in 2003 and was admitted to the Thai Bar in 2004. He also holds a Master’s Degree in law from Harvard University. He joined DS&B in October 2004 and became the firm’s newest partner on 1 January 2017. He handles contentious and non-contentious trademark prosecution matters, IP enforcement matters and a number of non-IP matters.